USPTO Patents Application 10033728

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO. CONFIRMATION NO.

10/033,728

12/28/2001

Slade Mitchell

47053 7590 04/13/2006

CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1420 FIFTH AVENUE
SUITE 2800

SEATTLE, WA 98101-2347

260042.450C1

7464

EXAMINER

VTLNGOCK

ART UNIT

PAPER NUMBER

2623

DATE MAILED: 04/13/2006

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Office Action Summary

Application No.

10/033,728

Applicant(s)
MITCHELL, SLADE

Examiner

Ngoc K. Vu

Art Unit

2623

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )□ Responsive to communication(s) filed on .

2a)D This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Pis p osit i nn of Claim*

4) ^ Claim(s) 1-42 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) D Claim(s) is/are rejected.

7) D Claim(s) is/are objected to.

8) ^ Claim(s) 1-42 are subject to restriction and/or election requirement

Application Papers

9) D The specification is objected to by the Examiner.

10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1. D Certified copies of the priority documents have been received.

2. Q Certified copies of the priority documents have been received in Application No. .

3. D Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachments)

1) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) □ Notice of Informal Patent Application (PTO-152)

Paper No(s)/Mail Date . 6) D Other: .

U.S. Patent and Trademark Office
PTOL-326 (Rev. 7-05)

Office Action Summary

Part of Paper No./Mail Date 20060410

Application/Control Number: 10/033,728 Page 2

Art Unit: 2623

DETAILED ACTION

Election/Restrictions

1 . Restriction to one of the following inventions is required under 35 U.S.C. 121 :

I. Claims 1-5, drawn to a client-side system, classified in class 725, subclass 141.

II. Claims 6-16 and 35-42, drawn to a video provider system, classified in class 725,
subclass 138.

III. Claims 17-34, drawn to accessing supplemental content, classified in class 725,
subclass 112.

The inventions are distinct, each from the other because of the following reasons:

2. Inventions I, II and III are related as combination and subcombination. Inventions in this
relationship are distinct if it can be shown that (1) the combination as claimed does not require
the particulars of the subcombination as claimed for patentability, and (2) that the
subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant
case, the combination as claimed does not require the particulars of the subcombination as
claimed because they are separately usable such as the client-side system does not require the
utility of the video provider system. The subcombination has separate utility such as use in
system other than client-side system. In another instant case, the combination as claimed does
not require the particulars of the subcombination as claimed because the video provider system
does not require the feature of accessing supplemental content. The subcombination has
separate utility such as indicated by the different limitations as outlined in the respective
grouping of the different claimed invention as illustrated above.

Application/Control Number: 10/033,728 Page 3

Art Unit: 2623

3. Because these inventions are independent or distinct for the reasons given above and
have acquired a separate status in the art in view of their different classification, restriction for
examination purposes as indicated is proper.

4. A telephone call was made to Kevan Morgan on March 20, 2006 to request an oral
election to the above restriction requirement, but did not result in an election being made.

Applicant is advised that the reply to this requirement to be complete must include (i) an
election of a species or invention to be examined even though the requirement be traversed (37
CFR 1.143) and (ii) identification of the claims encompassing the elected invention.

The election of an invention or species may be made with or without traverse. To
reserve a right to petition, the election must be made with traverse. If the reply does not
distinctly and specifically point out supposed errors in the restriction requirement, the election
shall be treated as an election without traverse.

Should applicant traverse on the ground that the inventions or species are not patentably
distinct, applicant should submit evidence or identify such evidence now of record showing the
inventions or species to be obvious variants or clearly admit on the record that this is the case.
In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the
evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.

Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Ngoc K. Vu whose telephone number is 571-272-7306. The examiner can
normally be reached on Monday-Thursday.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, John W. Miller can be reached on 571-272-7353. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.

Application/Control Number: 10/033,728

Page 4

Art Unit: 2623

Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

April 10, 2006

Ngoc K.Vu
Primary Examiner
Art Unit 2623